SUMMARY:

Lead and oversee the Firm’s IP Operations department, including docketing, PCT, and foreign filing resources and personnel, and continuously develop departmental procedures and policies, with the use of technology, to ensure efficient, accurate, consistent, and operational excellence for the Firm and its clients. This role drives innovation within the department, oversees high-performing teams, and ensures initiatives are executed timely, within budget, and aligned with the Firm’s goals and strategic objectives.

ESSENTIAL DUTIES:

• Provide direction and oversight to the Firm’s Docketing team to ensure that it is well positioned to consistently and efficiently update and maintain the Firm’s docketing systems based on daily action items received from the US Patent and Trademark Office, the Firm’s clients, and the Firm’s foreign associate teams.
• Provide direction and oversight to the Firm’s PCT and Foreign Filing teams to ensure that they are well positioned to consistently and efficiently manage and direct timely PCT and foreign filings, including applications filed with the US Patent and Trademark Office as well as applications filed with foreign patent offices via the Firm’s foreign associate teams.
• Continue the Firm’s efforts to leverage AI functionality to increase efficiency and improve the Firm’s workflows and procedures.
• Assist and support the Firm’s efforts to prioritize tasks, maintain team focus, and address performance and personnel challenges.
• Ensure accountability, smooth execution, and oversight of:
  • Timely docketing entry of deadlines, verification, and the delivery/accessibility of necessary communications firmwide.
  • Delivery of necessary reports firmwide.
  • Timely filing of necessary matters and documentation of foreign, National Phase, and PCT filings.
  • Timely completion of updates to client databases under the docketing department’s responsibility.
• Facilitate cross-training, collaboration, as well as task and function specific department services to ensure smooth and consistently efficient support and productivity.
• Assist in maintaining and developing standard communication procedures for attorney teams and clients.
• Oversee projects and transfers to ensure each facet is assigned appropriately and completed.
• Ensure resources are available to maintain necessary operations daily, during holidays, as well as emergencies (weather or outage related).
• Interface directly with attorneys and assistants as necessary to help facilitate the completion of tasks and address any concerns or problems.
• Communicate and collaborate with the Executive Director, Firm committees, groups, and departments to ensure IP Operations maintain streamlined and cost-effective practices for the Firm.
• Liaise with the accounting, IT, and HR directors to ensure the Firm’s departments maintain cooperative and symbiotic relationships to optimize practices across the Firm and effectively address challenges.
• Monitor incoming communications to and from various groups and address anomalies, as necessary.
• Manage vendor and membership management (e.g., CPI, Black Hills, IPDAS, NDA, etc.), address potential or imminent challenges, and communicate needs or changes that require review.
• Manage IP data analysis and reporting for the firm related to:
  • Reciprocity reporting of incoming and outgoing transactions and revenue to allow attorneys to generate respective reports.
  • Quality assurance queries to ensure data accuracy.
  • Oversight and management of customer numbers.
• Maintain cost-effectiveness while upholding operational efficiency, and quality of work of IP Operations for the firm.
• Send necessary announcements firmwide regarding holidays/closures and significant changes in laws or procedures.
• Use the CPI docketing system and the annuity system invoicing to ensure overall costs are synced to accounting records and properly applied to each office and group.

QUALIFICATIONS:

• Strong technical knowledge of IP docketing and record management systems and processes.
• Proven knowledge and ability to effectively manage domestic and foreign IP prosecution dockets (patents, trademarks, copyrights) and oversee IP records.
• Proven leadership and organization abilities, as well as exceptional oral and written communication skills, and sound judgment.
• Proficiency in Microsoft Office Suite and/or related software, docketing systems, and the ability to effectively utilize various applications such as iManage, CPI, and IPDAS.
• Familiarity with recent developments in the use of AI functionality in IP Operations systems.
• Ability to effectively work in a fast-paced environment, and manage conflicting priorities,
• Familiarity with USPTO, WIPO, and international filing systems, procedures, and requirements.
• Knowledge of electronic filing systems and databases.
• Ability to delegate tasks, evaluate performance, and develop staff.
• Commitment to accuracy, confidentiality, and compliance.

EDUCATION & EXPERIENCE:

• At least eight (8) years of relevant IP experience and at least three (3) years in a supervisory role.
• Bachelor’s or master’s degree in a related area is preferred or a combination of specialized IP training with experience.

About Harness IP

Harnessing innovation for over 100 years, Harness IP’s team of trademark and patent attorneys serve clients in all areas of intellectual property law, including patents, trademarks, IP litigation, PTAB Proceedings, trade secrets, due diligence investigations, and global IP management. Harness IP is dedicated to cultivating a culture of diversity, entrepreneurial thinking, and fearless creativity. We are passionate about people, relationships, and collegiality. Our team represents the most innovative businesses in the world, including four “top ten” Fortune Magazine companies. Our culture is informal, friendly and cooperative, and we provide both breadth and durability of practice, as well as an unwavering commitment to teamwork and collaboration. Simply, we care about you.

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